Under the provisions of 37 CFR § 1.129(a), a utility or plant application that has been pending for at least two years as of June 8, 1995 is entitled to only two submissions after final rejection. Submissions may include an information disclosure statement, an amendment or a new argument in support of patentability. Under prior U.S. Patent & Trademark Office (USPTO) practice, the office action issuing after a submission by the applicant after final rejection was equivalent to the first office action in a continuing application. Since this practice resulted in some applicants filing multiple submissions after final rejection, the USPTO determined that the practice was inconsistent with the goal of expediting prosecution of such long pending applications. Thus, effective as of May 6, 2005, the USPTO will no longer treat the next office action after a submission under § 1.129(a) as the first action in a continuing application. Instead, such office actions will be equivalent to an action following a reply to a non-final office action; i.e., if on the merits it shall be made final except where the examiner introduces a new ground of rejection that is neither necessitated by the applicant’s amendment of the claims nor based on information submitted in an information disclosure statement.
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